USPTO Patents Application 10089810

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O.Box 1450

Alexandria, Virginia 22313-1450
www,uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/089,810

08/05/2002

Lutz Brandt

7590

08/02/2004

Steven C Benjamin

E I Dupont De Nemours and Company

Legal Patents

Wilmington, DE 19898

FA- 1068

3040

EXAMINER

TSOY, ELENA

ART UNIT

PAPER NUMBER

1762

DATE MAILED: 08/02/2004

Please find below and/or attached an Office communication concerning this appHcation or proceeding.

PTO-90C (Rev. 10/03)

Application No. I Appiicant(s) ^^H^

1 0/089.810 BIRANDT ET AL.

Office Action Summary

Examiner

Elena Tsoy

Art Unit

1762

" The MAILING DATE of this communication appears on the cover sheet with the correspondence address ~
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 . 1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above Is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply Is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
• Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any

earned patent tenm adjustment. See 37 CFR 1 .704(b).

Status

1 )S Responsive to communlcation(s) filed on 10 June 2004 .
2a)^ This action is FINAL. 2b)n This action is non-final.

3) 0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1 935 CD. 1 1 . 453 O.G. 21 3.
Disposition of Claims

4) K Claim(s) 10-24 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) 13 Claim(s) 10-24 is/are rejected.
/)□ Claim(s) is/are objected to.

8) 0 Claim{s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10)n The drawing(s) filed on is/are: a)n accepted or b)^ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
1 1 )□ The proposed drawing correction filed on is: a)n approved b)^ disapproved by the Examiner.

If approved, corrected drawings are required in reply to this Office action.

12) n The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§ 119 and 120

13) S Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).

a)KlAII b)n Some*c)n None of:

1 .□ Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No, .

3. H Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 1 7.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

14) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application).

a) □ The translation of the foreign language provisional application has been received.

15) n Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.

Attachment(s)

1 ) □ Notice of References Cited (PTO-892) 4) □ Inten/lew Summary (PTO-413) Paper No(s). .

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) □ Notice of Infomfial Patent Application (PTO-152)

3) ^ Infonmatlon Disclosure Statemenl(s) (PTO-1449) Paper No(s) 6/10/04 . 6) D Other:

LI.S. Patent and Trademark Office
PTO-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 0704

Application/Control Number: 1 0/089,8 1 0 Page 2

Art Unit: 1762

Response to Amendment

1 . Amendment filed on June 10, 2004 has been entered. Claims 10-24 are pending in the
application.

Claim Rejections - 35 (JSC §103

2. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

3. Claims 10, 12, 13, 15, 19-24 stand rejected under 35 U.S.C. 103(a) as being unpatentable
over Betz et al (US 6,261,645) in view of Bishop et al (US 4,609,718, which corresponds to EP
204161) for the reasons of record as set forth in Paragraph No. 4 of the Office Action mailed on
March 29, 2004.

4. Claims 1 1, 14, 16-18 stand rejected under 35 U.S.C. 103(a) as being unpatentable over
Betz et al (US 6,261,645) in view of Bishop et al (US 4,609,718, which corresponds to EP
204161), further in view of Heil et al (US 4,666,783) for the reasons of record as set forth in
Paragraph No. 5 of the Office Action mailed on March 29, 2004.

Response to Arguments

5. Applicants' arguments filed June 10, 2004 have been fully considered but they are not
persuasive.

Applicants argue that claimed invention is not obvious over Betz et al in view of Bishop et
al since (i) Bishop et al describes that any organic diisocyanate such as a diisocyanate in which a

Application/Control Number: 10/089,810 Page 3

Art Unit: 1762

linear aliphatic chain containing at least 6 carbon atoms separates the two isocyanate groups
(which is not a direct pointer to acyclic aliphatic diisocyanate having 8 C atoms) can be used to
form the acrylate-terminated oUgomers, (ii) Bishop et al fail to indicate that such diisocyanates can
be used to make the lu-ethane methacrylates of Applicant' claimed invention, and (iii) acyclic
aliphatic diisocyanate having 8 C atoms are not utilized in any of Bishop et aF examples.
The Examiner respectfully disagrees with this argument.

As to (i) . "a diisocyanate in which a linear aliphatic chain containing at least 6 carbon
atoms separates the two isocyanate groups" of Bishop et al is a direct pointer to acyclic aliphatic
diisocyanate having 8 C atoms since a term ''at least'' includes 6 atoms.

As to (ii). Betz et al show that processes for preparation of urethane methacrylates are well
described in the art (cf e.g. Bishop et al) (See column 7, Unes 14-54). Bishop et al describes that
any organic diisocyanate such as a diisocyanate, in which a linear aliphatic chain containing at
least 6 carbon atoms separates the two isocyanate groups, can be used to form urethane
methacrylates. Therefore, one of ordinary skill in the art at would understand that any organic
diisocyanate such as a diisocyanate, in which a linear aliphatic chain containing at least 6 carbon
atoms can be used in well known processes for preparation of urethane methacrylates of Betz et al.

In other words, a secondary reference of Bishop et al is reUed upon not to show the
urethane methacrylates of Applicant' claimed invention, but to show that in well known processes
for making urethane acrylates (methacrylates), any organic diisocyanate such as a diisocyanate, in
which a linear aliphatic chain containing at least 6 carbon atoms separates the two isocyanate
groups, can be successfully used.

As to (iii) , it is held that PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY
CONTAIN. See Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354,

Application/Control Number: 10/089,810 Page 4

Art Unit: 1762

1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir.1998) (The court held that the prior art anticipated the
claims even though it taught away from the claimed invention. "The fact that a modem with a
single carrier data signal is shown to be less than optimal does not vitiate the fact that it is
disclosed."). NONPREFERRED EMBODIMENTS CONSTI-TUTE PRIOR ART. Disclosed
examples and preferred embodiments do not constitute a teaching away from a broader
disclosure or nonpreferred embodiments. See MPEP 2123. Therefore, Pettus does teach that the
process can be used for coating a chrome plated substrate, may be with inferior results than for
aluminum substrates. But again, it is expected since according to Applicants "It is well known in
the art that chrome surfaces are more difficult to coat than aluminum".

Conclusion

6. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS fi:'om the mailing date of this action. In the event a first reply is filed within TWO
MONTHS of the mailing date of this final action and the advisory action is not mailed until after
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
CFR 1.136(a) will be calculated fi-om the mailing date of the advisory action. In no event,
however, will the statutory period for reply expire later than SIX MONTHS fi-om the mailing date
of this final action.

Application/Control Number: 10/089,810 Page 5

Art Unit: 1762

7. Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Elena Tsoy whose telephone number is (571) 272-1429. The examiner can
normally be reached on Mo-Thur. 9:00-7:30.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor.
Shrive Beck can be reached on (571) 272-1415. The fax phone number for the organization where
this application or proceeding is assigned is 703-872-9306.

Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

Elena Tsoy
Primary Examiner
Art Unit 1762

July 29, 2004